The Coca-Cola Company v Frucor Soft Drinks Ltd
(2013 NZHC 3282; 10th December 2013)
Coca-Cola was unsuccessful in trade mark infringement claims against Frucor, who bottle and distribute PepsiCo products in New Zealand. In October 2009 PepsiCo released a new range of 300ml bottles, which it called the “Carolina” bottle, in New Zealand. The Carolina bottle design was completed in 2004 and it is the subject of uncontested design registration in various countries, although such protection was not sought in New Zealand.
Coca-Cola, who easily dominates the cola market in New Zealand, objected to the use of the Carolina bottle in New Zealand based on its similarity to Coca-Cola’s well known contour shape bottle and three trade mark registrations. The first registration is a 1948 2D representation of its contour shape bottle. From 1995, in order to be TRIPs compliant, the Trade Marks Amendment Act 1994 widened the definition of what could constitute a trade mark. While not specifically including shape marks, the Intellectual Property Office of New Zealand subsequently allowed shape marks to be registered. Coca-Cola subsequently registered two different depictions of the contour shape bottle and in each case claimed it as a 3D shape. The Trade Marks Act 2002 specifically includes shape marks as being capable of registration.
While acknowledging differences between the contour and Carolina bottles, Coca-Cola claimed the silhouette of its contour bottle is its most distinctive and memorable feature. It argued that the silhouette of the Carolina bottle also acts as a sign in the course of trade that is likely to be taken as use of a trade mark, but that its similarity to the contour bottle silhouette makes such use infringing.
The Judge agreed with Coca-Cola’s submission that for shape registrations to have meaning they cannot be circumvented by another trader adding a brand name, colour or other distinctive feature to the same or similar shape. The Judge considered various UK case law developments that argued against this proposition to be irrelevant since they are made under a different statutory regime that conflates the two-step analysis required by New Zealand legislation. In particular, the infringement provisions of section 89 require first indentifying the sign being used in the course of trade by the alleged infringer and only then considering whether that sign is being used in a way that is likely to be taken as trade mark use. Accordingly the Judge found that the Carolina bottle shape on its own qualifies as a sign used in the course of trade. The Judge next considered whether PepsiCo’s and Frucor’s use of that sign is likely to be taken as use of a trade mark. The Judge found that the evidence established that the bottle and its shape were supposed to be noticed and was designed to be a proprietary bottle and concluded that a substantial number of the relevant market would consider the Carolina bottle to be used as a trade mark.
However, when comparing the Carolina bottle with the registrations for the contour bottle the Judge held that they were not sufficiently similar to establish infringement. There were differences in the “waist” feature and the presence of a “waist” feature is common to the trade. The Judge identified 5 distinctive features portrayed in the contour bottle registrations, but only found one of those features to be shared by the Carolina bottle. The Judge also noted that the Carolina bottle’s embossed horizontal wave pattern further distinguished it from the contour bottle. The Judge refused to allow the findings on infringement to be influenced by Coca-Cola’s use in advertising campaigns of silhouette’s of the contour bottle. They were not considered fair and normal use of the registered marks as they are not a full expression of or surrogate for those marks.
While not required to the Judge went on to hold on the basis of the foregoing analysis that no issue of deception or confusion can arise. The Judge also noted that despite Coca-Cola’s domination of the market no evidence of confusion was available and it was unlikely that any such confusion would remain undetected. Coca-Cola’s passing off and breach of the Fair Trading Act actions likewise failed due to lack of similarity and lack of confusion.